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By J.D. Houvener
Patent Attorney and Founder

Hi, my name is J.D. Houvener, and I’m your host of the Bold Today’s Show where you, the inventor, entrepreneur, or business owner, get your daily inspiration to help you make the world a better place. [Music]

We’re here talking about step 10 today. There’s quite a few steps, I know, but hang in there with me; we’re almost there on how to get a patent granted for your invention. Now we’ve already filed your application; we’ve talked about international applications and all the stuff that needs to be thought of just before filing. Now we’ve already filed, okay? What happens next? That’s office actions.

Office actions, what does that mean? Well, that’s any type of response that we get from the USPTO when your application gets submitted to the Patent Office. There’s a process that it’ll get assigned to a specific art unit, and more particularly, one U.S. examiner. Yeah, it’s true; your application is really sent on to the desk of an actual human being that works at the Patent Office in Alexandria, Virginia. Okay, the truth is that those many patent agents and examiners there at the office do work virtually, so they may have a house in Denver or Miami, and that’s what they’re doing the work, but it’s part of the Patent Office, and they work.

When it gets assigned to that examiner, they’re gonna do their diligence, okay? So it’s their turn to do an examination, a research, and to give you an advisory position on what they think. If they think your application is novel, non-obvious, and has utility or if they see something wrong. Maybe they reject some or all of the claims or object to the procedure that you’ve done in filing the application. Those are two big issues that can come up. They can be the main reasons, the substantive issues. There are hundreds of reasons why they might reject or object. At the high level, examiners might find a piece of prior art that we didn’t find; it’s possible, it happens.

They may also see a piece of prior art that we found, but they might look at it a little differently than we did. And so what happens is they’ll send a rejection back to you, the inventor, and as your advocate and your attorney, it’s our job to then provide you a recommendation on how we might need to come back with legal argument or amending the claims of the patent application. It could certainly involve amending the specification, that’s the written description or the drawings, or adding to it. There’s lots of different options here, but know that it does require work on our end, and we’re going to need to make sure that we compensate the attorneys for that work. So there will be either hourly or flat fee billables for that work, but just know that we’re in your corner. We’re always going to make sure we’ve worked with you to help you understand how aggressively or how passively you want to be in this office action response.

So if, for example, you want to be quite aggressive and want to make sure that you get as most rights as possible, you’re gonna want to do just legal argument and not amending your claims. When you make amendments to claims and make your scope a little bit narrower to get around that rejection and office action, in essence, you’re reducing the value of your patent rights. So if you want to be aggressive, you’d want to avoid doing that, and you would just provide legal argument. We would help you think about ways you can argue and strategize about getting around that examiner.

If you’re looking to be a little more cost-conscious and not expect another rejection, you may want to just simply concede to what the examiner is saying, do an interview, and say, “Okay, I get it, Mr. Examiner, Mrs. Examiner; hi, I will make some amendments, and we will limit the scope to make sure we don’t tread on this prior art.” In that case, we’ll simply address the office action and get it issued right away.

I know I covered a lot today about office actions. If you have more information that you need to know, please go to our website; it’s boldpatents.com and go to the office actions tab. You’re gonna see a ton of information, some examples, and a way to get ahold of us to set up your free consultation.

Today I’m your host, J.D. Houvener, of the Bold Today Show. Go big, go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/